Patent Agents and Attorneys

A few chemists within pharmaceutical companies find work as registered patent agents, licensed to practice before the U.S. Patent Office. Their licenses, rather than doctor s or master s degrees, are prerequisites met by passing an examination called the patent bar. They are sometimes obtained with help fi-om a patent department in a pharmaceutical company. There, chemists learn fi om attorneys how to compose and prosecute patent applications. The licenses entitle agents to practice before the Patent Office but not before any court, which is a task reserved to lawyers. 

practical knowledge of Chemical Abstracts nomenclature can help land one of these jobs. In some companies a chemical information specialist composes the names of chemical compounds from structural drawings and draws structures from names. Systematic names are essential ingredients of NBA documents, IND applications, patents, and articles in chemical and pharmacological journals. They are also important in carrying out literature searches and in understanding the results. 

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Large companies, sometimes, employ not only patent agents and attorneys, but also another type of specialist, liaisons that interface between science and law. In attorney Wayne Montgomery s experience this is a real luxury that it s nice to have. They do things like audit notebooks, help draft examples, and go back and forth between the chemists and the attorneys and facilitate that interaction. ... 

Different organizations have different formats for the record of invention (i.e., invention disclosure) but some common threads include a brief description of the invention, key dates including conception and reduction to practice, references to key notebook pages, and a list of proposed inventors and their contact information. This document serves as an important record as well as a helpful aid to get the patent agent or attorney started on drafting the patent application. 

Both the Constitution and the first Patent Act contemplated the simple situation of an inventor making an invention himself, reducing it to practice, and then proceeding with the filing of an application for a patent, which would have been prepared, at first, by himself and later on by patent agents or attorneys. 

Patent applications are assigned a serial number when filed and a document number when they are published. These numerical identifiers are printed on the face of the patent, as is the serial number of the priority application when there is one. Additional bibliographic information may include the name of the patent examiner, the name of the patent agent or attorney handling the application, and patent classification codes that define the field of technology claimed. Patent classification codes were the original search tools. 

CASSIS USPTO USPTO Office of Electronic Data Conversion and Dissemination CASSIS, the Classification and Search Support Information System of the USPTO, comprises three subfiles CASSIS/BIB, bibHographic information for utiHty patents from 1969 and for others from 1977 CASSIS/CLASS, USPTO classification by patent number of class/subclass CASSIS/ASSIST, iadex to U.S. Manual of Classification U.S. Manual of Classification, Class Definitions IPC, U.S. Classification Concordance Manual of Patent Examining Procedure Attorneys/ Agents Roster, etc... 

Until now, we have primarily focused on the omission by the French agent to submit the JACS reference but we also need to consider the role of the inventors as well, since we have already discussed that the affirmative duty to submit material information extends to them as well. We do know that the French agent was already aware of the JACS reference, but it probably would be too much to expect that inventors check to make sure their agent or attorney actually submitted the references to the USPTO. However one should expect that the inventors will review the draft of the patent application before it is submitted, to make sure that what is placed in the patent application is an honest appraisal of what the invention actually is and does. So this brings us to the view from the inventor s perch. The inventors were the ones most familiar with the technology that was being patented. They knew, better than anybody, whether the patent application was an accurate description of the method that they... 

The bibliography appears on the cover page. It presents the title, inventors, assignee, attorney, filing and issue dates, other information, and, in some cases, the Markush structure (see text below). Patent titles may or may not explicate the inventions covered, depending on the business strategy adopted by the agent or attorney responsible for the application. A title can... 

They re complex enough that even after many years of experience with them, scientists probably won t be capable of properly drafting their own patent applications. But, of course, no one expects them to do that Companies employ patent agents (individuals who have passed the patent bar exam but aren t attorneys) and patent attorneys, probably at considerably higher expense, to do this instead. Smaller companies may not keep such professionals on their payroll, but instead might opt to work with IP law firms as needed. 

Careers in intellectual property law are varied, and may involve different training and specialization to become an attorney, patent agent, patent examiner, licensing specialist, scientific advisor, or paralegal. Persons with legal training in intellectual property law may also become involved in management, in executive positions that do not necessarily involve the practice of law. 

Patent Agent/Scientific Advisor A patent agent is a person who has passed the registration exam administered by the USPTO, and is therefore qualified to prosecute patent applications in the USPTO on behalf of clients. As stated above, only an attorney can give an opinion as to the validity, enforceability, or... 

Typically, scientific advisors are persons with advanced degrees, hired by a law firm, who have not yet become patent agents. They may work with attorneys on litigation or prosecution matters to provide their scientific expertise, and function like a patent agent. However, they are unable to represent clients before the USPTO until they pass the agent s exam. 

Law firm Law firms provide various ways to pursue a career in intellectual property law, as attorneys, patent agents, scientific advisors, and paralegals. 

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